Yahoo! Inc. v. Domain Contact 3
Claim Number: FA0808001222420
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner L.L.P., Washington, D.C., USA. Respondent is Domain Contact 3 (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotjobsyahoo.com>, registered with Dotregistrar.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 28, 2008; the National Arbitration Forum received a hard copy of the Complaint August 29, 2008.
On August 28, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <hotjobsyahoo.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar verified that Respondent is bound by the Dotregistrar registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 2008, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@hotjobsyahoo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <hotjobsyahoo.com>, is confusingly similar to Complainant’s YAHOO! and HOTJOBS marks.
2. Respondent has no rights to or legitimate interests in the <hotjobsyahoo.com> domain name.
3. Respondent registered and used the <hotjobsyahoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a global Internet communications, media, and commerce company that offers Internet directory, information, shopping, and other online services. Since 1994, Complainant has operated under the YAHOO! mark (Reg. No. 2,403,227, issued November 14, 2000), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered its HOTJOBS mark (Reg. No. 2,786,318, issued November 25, 2003, filed July 2, 2002) with the USPTO. Complainant also owns numerous other trademark registrations, as well as numerous domain names, including the <yahoo.com> and <hotjobs.yahoo.com> domain names.
Respondent registered the disputed <hotjobsyahoo.com> domain name March 14, 2003, and used it to host a pay-per-click website. The disputed domain name no longer leads to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s YAHOO! and
HOTJOBS trademark registrations with the USPTO individually and collectively
confer upon Complainant sufficient rights in the marks under Policy ¶
4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive."). Moreover, the Panel finds that effective
dates for these registered trademarks dates back to the filing date. See Hershey
Respondent’s
disputed <hotjobsyahoo.com>
domain name contains Complainant’s YAHOO! mark,
without the exclamation point, along with the HOTJOBS mark. The Panel finds that neither the addition of
the generic top-level domain “.com” nor the omission of the exclamation point
is relevant under Policy ¶ 4(a)(i). Therefore, the disputed domain name is
confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name registrants .
. . ."); see also Mrs. World Pageants, Inc. v. Crown
Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that
punctuation is not significant in determining the similarity of a domain name
and mark); see also Nintendo
of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding
confusing similarity where respondent combined the complainant’s POKEMON and
PIKACHU marks to form the <pokemonpikachu.com> domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserted that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant bears the burden of alleging a sufficient prima facie case supporting its allegations. The Panel finds that Complainant met this burden, and that the burden shifts to Respondent to demonstrate rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
No evidence in the record suggests Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “Domain Contact 3.” Respondent also failed to allege authorization to use Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s disputed domain name previously resolved to a
website that hosted parked links, and subsequently failed to resolve to any
active website. Such facts permit an
inference that Respondent conducted the parked web page activity for commercial
benefit via click-through fees. The
Panel therefore finds that Respondent failed to show a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) through either
its use or non-use of the disputed domain name.
See Disney Enters., Inc. v. Kamble,
FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum
Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is
not using the <bloomberg.ro> domain name in connection with an active
website. The Panel finds that the
[inactive] holding of a domain name that is identical to Complainant’s mark is
not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and
it is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s domain name
bears two of Complainant’s marks in their entirety and unaltered but for the
minor omission of the exclamation point.
Internet users who sought Complainant’s business were likely siphoned
off through the instant disputed domain name to Respondent’s corresponding
website, which featured parked links.
Respondent presumably received a monetary benefit from these
advertisements by referral fees, which was likely the commercial impetus for
the disputed domain name’s registration.
Respondent therefore created a substantial likelihood of confusion as to
the source and affiliation of the disputed domain name and corresponding
website, given the prominent placement of Complainant’s mark in the disputed
domain name. Therefore, the Panel finds
that Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv).
See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain).
The Panel also finds
that Respondent’s inactive holding of the disputed domain name supports
findings of bad faith registration and use under Policy ¶ 4(a)(iii). See
Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith); see also DCI
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotjobsyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 13, 2008.
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